NOTE TO THE FILE
SERIAL NUMBER: 97116712
DATE: 05/25/2022
NAME: jschmidt2
NOTE:
Searched:
X Google
X Lexis/Nexis
X OneLook
X Wikipedia
X Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: Andrew Roppel <AARoppel@hollandhart.com>
Sent: Tuesday, May 24, 2022 11:34 AM
To: Schmidt, John <John.Schmidt@USPTO.GOV>
Cc: TMPros Agilent <TMPros-Agilent@hollandhart.com>; HH Docket <Docket@hollandhart.com>
Subject: US TRADEMARK APPLICATION SERIAL NO. 97116703 CTDX HRD; 97116707 CTDX LUNG; 97116712 CTDX FIRST (HH Ref. Nos. 115233.0200, 0205, and 0210)
Importance: High
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Mr. Schmidt,
Thanks for your correspondence below, which has been forwarded to me for response. Please note that a Revocation and Appointment of New Power of Attorney has been filed for these applications and that future communications should be directed to us at Holland & Hart.
Our client agrees with your suggested revisions to the descriptions of goods in class 5 (Medical diagnostic reagents and assays for testing of body fluids) and also agrees with your requests for disclaimers of “HRD” and “LUNG.”
We ask that you please proceed with these revisions via Examiner’s Amendments.
We look forward to hearing from you and invite you to contact us if you have any questions.
Kind regards,
Andrew
Andrew Roppel
Partner, Holland & Hart LLP
1800 Broadway, Suite 300, Boulder, CO 80302
T 303.447.7182 M 720.207.7590
CONFIDENTIALITY NOTICE: This message is confidential and may be privileged. If you believe that this email has been sent to you in error, please reply to the sender that you received the message in error; then please delete this e-mail.
From: Schmidt, John <John.Schmidt@USPTO.GOV>
Sent: Monday, May 23, 2022 8:39 AM
To: pctrademarks <pctrademarks@perkinscoie.com>
Cc: trademark_counsel@agilent.com
Subject: US TRADEMARK APPLICATION SERIAL NO. 97116703 CTDX HRD; 97116707 CTDX LUNG; 97116712 CTDX FIRST
Hello,
I am the Trademark Examining Attorney assigned to these applications and I am writing concerning a few issues.
First, the identifications are identical in these applications and they must be amended. Specifically, it must be clarified what the “assays” are testing for. The following wording is suggested:
C lass 05 - Medical diagnostic reagents and assays for testing of body fluids; Diagnostic kits comprised of medical diagnostic reagents and assays for cancer detection, monitoring and therapy selection; Diagnostic kits comprised of medical diagnostic reagents and assays for testing of bodily fluids for use in cancer detection, monitoring and therapy selection
Further, “HRD” must be disclaimed and “LUNG” must be disclaimed as being descriptive of the goods.
With your permission I can make these changes for you.
If I do not hear from you by WEDNESDAY, MAY 25, 2022, I will issue an Office Action for these requirements.
Best,
/John Schmidt/
Trademark Examining Attorney, Law Office 119
United States Patent and Trademark Office
(571) 272-7082